Degelman v. Pro-Tech - Reply Re PL MSJ

ROCHDOCS\561479\1
UNITED STATES DISTRICT COURT

WESTERN DISTRICT OF NEW YORK
DEGELMAN INDUSTRIES LTD.,
Plaintiff,
vs.
PRO-TECH WELDING AND FABRICATION, INC.
and MICHAEL P. WEAGLEY,
Defendants.
Civil Action No.: 06-CV-6346
DECLARATION OF MICHAEL A. OROPALLO IN SUPPORT OF
PLAINTIFFS MOTION FOR PARTIAL SUMMARY JUDGMENT
MICHAEL A. OROPALLO hereby declares as follows:
1. I am an attorney at law duly licensed to practice before the courts in the State of
New York and before this Court, and am a Partner at the law firm of Hiscock & Barclay, LLP,
attorneys for the Plaintiff Degelman Industries LTD (Plaintiff or Degelman). As such, I am
fully familiar with the facts and circumstances of this action.
2. I respectfully submit this Declaration in Support of Plaintiffs Motion for Partial
Summary Judgment.
3. Attached hereto as Exhibit A are true and accurate copies of each of the figures of
U.S. Patent Nos. D478,097, D519,128 and D519,129.
4. Attached hereto as Exhibit B are true and accurate depictions of each of the
accused products.
Case 6:06-cv-06346-JWF Document 96 Filed 12/08/09 Page 1 of 3
ROCHDOCS\561479\1 - 2 -
Dated: December 8, 2009 HISCOCK & BARCLAY, LLP
By: /s/ Michael A. Oropallo
Michael A. Oropallo
(Bar Roll No. 505267)
Attorneys for Plaintiff
Degelman Industries LTD
Office and Post Office Address
One Park Place
300 State Street
Syracuse, New York 13202-2078
Telephone: (315) 425-2831
Facsimile: (315) 703-7367
E-Mail: moropallo@hblaw.com
ROCHDOCS\561479\1 - 3 -
CERTIFICATE OF SERVICE
I, Michael A. Oropallo, hereby certify, that on this 8th day of December, 2009, I
electronically filed of the Declaration of Michael A. Oropallo with the Clerk of the District Court
for the Western District of New York using the CM/ECF system, which gave electronic
notification the following CM/ECF participants on this case:
Dan OBrien, Esq.
Woods Oviatt Gilman, LLP.
700 Cross Roads Building
2 State Street
Rochester, New York 14614
I also certify that a courtesy copy of these documents were served on the following via
first class mail:
Duane C. Basch, Esq.
1777 Penfield Road, Lower Level
Penfield, New York 14526
/s/ Michael A. Oropallo
Michael A. Oropallo
ROCHDOCS\561426\1
U.S. Patent No. D478,097
Case 6:06-cv-06346-JWF Document 96-2 Filed 12/08/09 Page 1 of 3
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Pro-Tech SPL Loader
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Pro-Tech SPB Backhoe
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Pro-Tech SPS Skid Steer
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Pro-Tech ALB Angle
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Pro-Tech FPL Fold Out
ROCHDOCS\561426\1 - 9 -
Pro-Tech SBL Switchblade Loader
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Pro-Tech Super Duty Loader
ROCHDOCS\561426\1 - 11 -
Pro-Tech SBB Switchblade Backhoe
ROCHDOCS\561426\1 - 12 -
Pro-Tech SBS Switchblade Skid Steer
ROCHDOCS\561426\1 - 13 -
Pro-Tech IST Loader
ROCHDOCS\561426\1 - 14 -
Pro-Tech IST Backhoe
ROCHDOCS\561426\1 - 15 -
IST Skid Steer
ROCHDOCS\561426\1 - 16 -
Pro-Tech PBS Pull Back
-- ~
I . J
'---'
ROCHDOCS\561426\1 - 17 -
Pro-Tech SPC Compact
ROCHDOCS\561426\1 - 18 -
FTF Forklift
UNITED STATES DISTRICT COURT
WESTERN DISTRICT OF NEW YORK
DEGELMAN INDUSTRIES LTD.,
Plaintiff,
vs.
PRO-TECH WELDING AND
FABRICATION, INC. and
MICHAEL P. WEAGLEY,
Defendants.
Civil Action No.
06-CV-6346
REPLY BRIEF IN FURTHER SUPPORT OF PLAINTIFF DEGELMAN INDUSTRIES
LTD.S MOTION FOR PARTIAL SUMMARY JUDGMENT
REDACTED COPY FOR ECF FILING
HISCOCK & BARCLAY, LLP
Degelman Industries Ltd.
2000 HSBC Plaza
100 Chestnut Street
Rochester, New York 14604-2404
Telephone (585) 295-4308
Facsimile (585) 295-8440
Christopher E. Blank E-Mail cblank@hblaw.com
of Counsel
One Park Place
300 South State Street
Telephone (315) 425-2831
Facsimile (315) 703-7367
Michael A. Oropallo E-Mail moropallo@hblaw.com
Of Counsel
TABLE OF CONTENTS
I. PRELIMINARY STATEMENT.......................................................................................... 1
II. ARGUMENT ..................................................................................................................... 3
A. The Design Patents are Infringed .................................................................................... 3
B. The Orsolini Drawing is Not Prior Art and the Proffered Evidence Fails to
Corroborate Public Use of Any Plow.............................................................................. 5
C. The Orsolini Drawing is Inadmissible Hearsay and Otherwise Fails to
Corroborate the Appearance of the Alleged Daniels Plow............................................ 6
D. The Tenco Evidence is Inadmissible................................................................................ 7
E. Plaintiff has Proven that Defendants Infringement was Willful ................................. 8
IV. CONCLUSION.................................................................................................................. 9
I. PRELIMINARY STATEMENT
Degelmans design patent case is about the ornamental features of a snow plow. The
097, 128 and 129 Patents (the Design Patents) protect the ornamental features that, together,
comprise the overall visual impression that should be compared with Defendants accused
products in accordance with the ordinary observer test recently set forth by the en banc panel
of the Federal Circuit.
The Federal Circuit has also instructed district courts not to reduce such a comparison to
a battle of experts:
As the district court recognized, our precedent in making the required comparison
"counsels against measuring the similarity of designs from the viewpoint of experts in
design." Goodyear Tire & Rubber Co. v. Hercules Tire & Rubber Co., 162 F.3d 1113,
1117, 48 USPQ2d 1767, 1769 (Fed.Cir.1998). Thus, whether the patented design and the
accused product are "substantially the same" is to be determined from the viewpoint of
"the eyes of men generally, of observers of ordinary acuteness, bringing to the
examination of the article upon which the design has been placed that degree of
observation which men of ordinary intelligence give." Id. (citing Gorham, 81 U.S. (14
Wall.) at 528). Analysis under the "ordinary observer" test is to be conducted with the
"ordinary observer" and not the expert designer in mind.
Contessa Food Products, Inc. v. Conagra, Inc., 282 F.3d 1370, 1381-82 (Fed. Circ. 2002)
(emphasis added); See also, Union Carbide Corp. v. American Can Co., 724 F.2d 1567 (Fed.
Cir. 1984)(the references and appellant's invention are easily understandable without the need
for expert explanatory testimony.).
Degelman has presented evidence of the striking similarity between Degelmans Design
Patents, and Defendants accused products.
1
Degelman has also presented evidence of confusion
by persons associated with the very parties to this lawsuit, who are involved in the snow removal
1
For the Courts convenience, Degelman has included a compilation of previously submitted drawings and
photographs in Exhibit A (the figures of the asserted design patents, each on a respective sheet) and in Exhibit B
(depictions of the accused products, also each on a respective sheet) to the Oropallo Declaration submitted herewith
2
industry. Suffice it to say, Degelman has presented more than a prima facie case of design
patent infringement, it has presented a case worthy of summary judgment.
In response to Degelmans Motion for Partial Summary Judgment, Defendants rely
almost exclusively on Jerre Heyer, and his detailed analysis of individual features of the Design
Patents and the accused devices, including an improper dissection of the parts, as opposed to a
comparison of the whole, that the ordinary observer test mandates. Defendants analysis is more
akin to the points of novelty test that the Federal Circuit recently abandoned. Snow plows,
like coffee makers
2
, are things that the average judge or jury (at least one in Western New York)
can assess on their own. In doing so, there is only one conclusion the ornamental features of
Defendants snow plows are substantially similar to the ornamental features set forth in
Degelmans Design Patents.
Defendants also place all of their proverbial eggs in one basket, in relying upon,
improperly during the infringement analysis, two uncorrobated and inadmissible pieces of
claimed prior art. First, the Tenco snowblower is not analogous prior art
3
. Second, there is no
foundation for the admissibility of the Tenco snowblower. Third, there is no corroboration for a
prior public use of a Daniels snow plow, and Defendants belated production of the oral
testimony of a previously unidentified witness is insufficient to overcome these deficiencies.
Fourth, the Orsolini drawing is not evidence of a prior public use, it is simply an incomplete
drawing of a snow plow whose probative value is outweighed by its prejudicial effect
4
.
2
Ironically, Defendants admit most consumers are capable of looking at two coffee makers and determining
whether they are substantially similar, (Def. Memo. of Law in Opposition [Dkt. No. 91] at p. 6) yet claim expert
testimony is necessary to compare the overall visual impression the ornamental features of a snow plow possess.
3
See Union Carbide Corp., supra, at p. 1572 (The determination that a reference is from a nonanalogous art is
therefore two-fold. First, we decide if the reference is within the field of the inventor's endeavor. If it is not, we
proceed to determine whether the reference is reasonably pertinent to the particular problem with which the inventor
was involved.).
4
An example of such is Defendants disclosure of such to Mr. Craig, in an attempt to shape his thirty year old
memory.
3
Bottom line, Defendants snow plows are strikingly similar to Degelmans patented
designs, warranting summary judgment of infringement.
II. ARGUMENT
A. The Design Patents are Infringed
The Court has construed the Design Patents. (Claims Construction Decision, Dkt. No.
66). The Court has before it Defendants catalogs, brochures and marketing materials. See e.g.
Exhibit B. And the question before the Court is whether or not Defendants accused products are
substantially similar, in overall appearance, to the ornamental features of the drawings in the
Design Patents. Degelman submits reasonable minds cannot differ, and an ordinary observer
would reach a single conclusion Defendants accused products infringe the Design Patents.
In an effort to blur the Federal Circuits recent mandate regarding the ordinary observer
test, Defendants offer the testimony of a seller of Defendants snow plows, as a proffered expert
on what an ordinary observer would conclude. However, instead of looking at the overall visual
impression that an ordinary observer would reach, Mr. Heyer focuses on a purported point of
novelty, and claims Defendants products do not infringe because the gussets depicted in the
plaintiffs design patents are single surface, triangular-shaped gussets. (Def. Memo., p. 11).
Ignoring that this improper characterization is irreconcilable with Defendants argument
that the claimed Orsolini drawing shows a plow with a wedge-shaped gusset, the argument is
nothing more than a blatant attempt to mislead the Court and reargue the Courts decision on
claim construction, instead of abiding by drawings contained in the Design Patents, as the
Federal Circuit in Egyptian Goddess suggested.
5
Under the Courts claim construction, it is
irrelevant how many surfaces the gussets have. What is relevant, however, is the overall visual
5
See Egyptian Goddess, 543 F.3d at 679 (Given the recognized difficulties entailed in trying to describe a design in
words, the preferable course ordinarily will be for a district court not to attempt to construe a design patent claim
by providing a detailed verbal description of the claimed design.)
4
similarity of the patented designs to the accused products, as viewed in the context of analogous
prior art.
Accordingly, the infringement analysis boils down to whether the accused products are
more similar in overall visual appearance to the patented design in the context of analogous prior
art. Even assuming, while not admitting, that the Defendants proffered prior art, the Daniels
pull plow and the Tenco snow blower, are both admissible evidence, the conclusion is
inescapable:
Exemplary Accused Product: Orsolini/Daniels Plow: Tenco Snow Blower:
The exemplary accused product is strikingly similar to the patented design, as are all of
the accused products shown in Exhibit B. With respect to the 128 Patent which claims the
ornamental design of a gusset as shown, the conformation, orientation, dimensions, and
placement of the gusset of the exemplary accused product is virtually identical to that of the
patented design. The overall appearance of the Tenco snow blower is so dissimilar from every
5
possible view and angle
6
, that it should not even be considered in the infringement analysis.
Further, if the Orsolini drawing were legally admissible, ironically, it would not meet
Defendants inaccurate and improper test, which it claims requires multiple views for the
substantial similarity analysis. Although Defendants criticize Degelman for failing to produce
multiple views of the accused products (even though Defendants include only a single view in
their marketing materials), they have not identified, nor described in what way, such alternative
views would alter the overall visual appearance of the accused products such that they would not
be considered substantially similar to the patented design.
7
The test for infringement is
substantial similarity, and, accordingly, there is not a requirement of complete identity, as Mr.
Heyer believes.
8
B. The Orsolini Drawing is Not Prior Art and the Proffered Evidence Fails to
Corroborate Public Use of Any Plow
Contrary to Defendants representations, Mr. Orsolini specifically recanted his sworn
affidavit (that was prepared by Defendants counsel before even identifying the witness to
Degelman).
9
Assumably recognizing this deficiency, and in a desperate attempt at post hac
corroboration, Defendants (without any explanation) try to introduce the testimony of a
previously unidentified and surprise witness Leslie Craig. For the reasons that follow, the Craig
affidavit is inadmissible and fails to corroborate a prior public use.
First, Leslie Craig was not previously or properly noticed as a witness pursuant to Rule
26 of the Federal Rules of Civil Procedure (FRCP). As such, Degelman was unaware of him,
6
A snow blower also serves a wholly different purpose than a snow plow.
7
See Egyptian Goddess, 543 F.3d at 680-683 (the ordinary observer test does not present the risk of assigning
exaggerated importance to small differences between the claimed and accused designs relating to an insignificant
feature simply because that feature can be characterized as a point of novelty.).
8
P. S.J. Mot.,Ex. J, Heyer Dep., p. 89, lines 7-10 (Q. Is it your opinion that that type of similarity is the only type
that would satisfy substantial similarity and design pat[ents] A. I feel it has to be a direct copy.) (emphasis added);
See also p. 88, lines 10-12 (A. Honestly, that would be my interpretation. Like a Chinese knockoff...).
9
P. S.J. Mot., Ex. P, Orsolini Dep., p. 11, lines 7-9 (Q: Do you recall seeing the plow tested? A: I must admit I
cannot recall it exactly, no.).
6
was unaware that he would be relied upon for attempted corroboration (a burden that is on
Defendants), and did not have the opportunity to question Mr. Craig.
10
The Craig affidavit
should thus be automatically stricken pursuant to Rule 37(c)(1), which precludes the use of this
type of evidence.
Assuming arguendo that the Craig Affidavit is admissible, further oral testimony in an
attempt to corroborate a prior public use, whether by an interested witness or not, is insufficient
to meet the corroboration standards set forth by the Supreme Court in The Barbed Wire Patent
and associated line of cases (where the Court rejected twenty-four such witnesses)
11
and
particularly, after the passage of over thirty years.
12
The Craig affidavit simply provides further
testimony that that courts are gravely suspicious of. Finnigan Corp. v. International Trade
Commission, 180 F.3d 1354 (Fed.Cir.1999) (oral testimony, unsupported by patents or exhibits,
tending to show prior use of a device regularly patented, is, in the nature of the case, open to
grave suspicion.).
C. The Orsolini Drawing is Inadmissible Hearsay and Otherwise Fails to
Corroborate the Appearance of the Alleged Daniels Plow
The facts of the present case are extraordinarily similar to that of Finnegan, where the
Court rejected such collateral material to support a similar prior public use argument. Finnigan
Corp. 180 F.3d at 1369 (The Jefferts' article simply does not corroborate his testimony because,
10
Defendants have contemporaneously filed a Motion to Strike with respect to this improper and untimely
evidence.
11
Finnigan Corp. 180 F.3d at 1370 (In the end, what we are left with is Jefferts' testimony concerning his alleged
public use. Such evidence is insufficient as a matter of law to establish invalidity of the patent. This is not a
judgment that Jefferts' testimony is incredible, but simply that such testimony alone cannot surmount the hurdle that
the clear and convincing evidence standard imposes in proving patent invalidity)).
12
See Juicy Whip Inc. v. Orange Bang Inc. 92 F.3d 728 (Fed. Cir. 2002) (finding no anticipation where The
testimony about the 1983 and 1988 dispensers came more than eight and twelve years, respectively, after the
witnesses saw the dispensers.)(emphasis added); see also In re Reuter, 670 F.2d 1015, 1021 (CCPA 1981) ("The
relationship of the witnesses and the fact that the asserted prior uses ended twenty years before the trial, and were
abandoned until the defendant reportedly learned of the patentee's practices, underscore the failure of this oral
evidence to provide clear and convincing evidence of prior knowledge and use.")(emphasis added)
7
as we have noted, that article is ambiguous at best concerning the claimed use of nonresonance
ejection.). Absent contemporaneous, corroborating documentary evidence of the public use,
such a claim fails to satisfy the strict clear and convincing standard in overcoming the
presumption of validity of the patent in suit. Id. The purported documentary evidence proffered
by Defendants is a drawing, rather than a contemporaneous, documentary evidence of a public
use as required by the caselaw. Further, the drawing is incomplete, not to scale, and is
admittedly not useful for fabricating a plow, and Defendants admit it is not a printed publication.
Finally, the deficiencies are exponential in light of Defendants claim that one view is
insufficient.
A further deficiency is that the drawing is inadmissible hearsay to the extent that it is
used to show that a snow plow was made and what features the plow had. Defendants offer the
Orsolini drawing in an ill-fated attempt to show a prior public use. However, there is nothing
about the drawing that raises an inference of public use. Further, Defendants admit that Orsolini
did not maintain any copies of the drawings and he had not seen it [for] many years until it was
presented to him at the original deposition. (OBrien Dec. 16). Mr. OBrien further swears in
his Declaration that Mr. Daniels kept the one isometric drawing as a keepsake which he kept
in his office... Id. In light of the above, the drawing constitutes inadmissible hearsay, and is
admittedly not a record kept in the course of regularly conducted business activity. Therefore, it
does not fall under an exception to the hearsay rules, nor have Defendants offered an explanation
otherwise.
D. The Tenco Evidence is Inadmissible
Defendants attempt to offer unauthenticated photographs and/or brochures of a non-
analogous Tenco Snowblower. Although Defendants did provide an unverified statement of
8
some undisclosed witness from Ithaca, New York on the last day of discovery (that had been
extended several times), the individual was never disclosed pursuant to Rule 26, and the
statement is unsworn. (Def. S.J. Mot. Exhibit 13). While the Tenco snow blower does not
anticipate the claims of the 576 Patent, it is also not admissible.
As evidence of a sale of the Tenco Model TC-373-LM, a supposed airport manager,
Robert Nicholas, purportedly prepared an unsworn letter, addressed to whom it may concern,
stating that a snow blower was purportedly bought and used by the airport in 1999, but fails to
set forth upon what he bases these conclusions, nor whether he has any personal knowledge of
such. Id. Defendants belated and insufficient attempt to authenticate, let alone corroborate,
the proffered Tenco reference, is unavailing, and the letter is inadmissible. Further,
inadmissible on hearsay grounds is the alleged screen shot purportedly taken from a Tenco
website, with a print date of 2007, and the uncorroborated invoice, also with a print date of
2007. Because no other admissible evidence has been produced to substantiate Defendants
claim of a commercial sale or use of the Tenco snow blower, the Tenco snow blower reference
is likewise inadmissible and inapplicable to this motion.
Finally, assuming arguiendo that the so-called prior art Tenco snow blower is
admissible, it is non-analagous art and inapplicable to the infringement analysis or, at the very
least, shows an overall ornamental design so dissimilar from that of the patented designs that it
should be entirely disregarded.
E. Plaintiff has Proven that Defendants Infringement was Willful
Defendants only proffered evidence in support of their argument that their infringement
was not willful is Weagleys bare, self-serving, and uncorroborated affidavit. The last paragraph
on p. 13 of Defendants Memo of Law in Opposition to Plaintiffs Motion For Partial Summary
9
Judgment sets forth Defendants only defense to their willful infringement: Mr. Weagley
developed the design for the accused products and the wedge-shaped gusset they incorporate on
his own.... Though largely irrelevant to the infringement, Weagleys statement is suspect, given
the lack of a single piece of documentary evidence to show such. Although Weagley
documented nearly every purported innovation that Defendants claimed in numerous patents
Weagley personally filed for and was granted, there is not a single sketch, drawing, or plan, that
shows Weagley coincidently came up with a wedge-shaped gusset, or the conical section gusset
of the same configuration and conformation as Degelmans patented design. However, there is
evidence, offered by an independent witness, who states Defendants were aware of the
Degelman Wedge, prior to incorporating such into Defendants accused products. Ex. F to P.
S.J. Mot., Singer Dep., p. 36, lines 14-22 (A: I was, I guess I was aware that there was a concept
in something that Degelman did that had inspired us.). Degelman thus submits it is entitled to
judgment of willful infringement as a matter of law.
IV. CONCLUSION
In light of the foregoing, it is respectfully requested that Degelmans motion for partial
summary judgment be granted in its entirety, for the costs of this action, including reasonable
attorneys fees, and for such other and further relief as to this Court may seem equitable.
Respectfully submitted,
HISCOCK & BARCLAY, LLP
Dated: December 8, 2009 By: s/ Michael A. Oropallo
Michael A. Oropallo
Christopher E. Blank
One Park Place
300 South State Street
Telephone: (315) 425-2831
Facsimile: (315) 703-7367
E-Mail: moropallo@hblaw.com
REDACTED
REDACTED
CERTIFICATE OF SERVICE
I, Michael A. Oropallo, hereby certify, that on this 8th day of December, 2009, I
electronically filed Plaintiffs Reply Brief in further Support of Plaintiffs Motion for Partial
Summary Judgment and Declaration of Michael A. Oropallo, with exhibits thereto with the Clerk
of the District Court for the Western District of New York using the CM/ECF system, which
gave electronic notification the following CM/ECF participants on this case:
Dan OBrien, Esq.
Woods Oviatt Gilman, LLP.
700 Cross Roads Building
2 State Street
Rochester, New York 14614
I also certify that a courtesy copy of these documents were served on the following via
first class mail:
Duane C. Basch, Esq.
1777 Penfield Road, Lower Level
Penfield, New York 14526
/s/ Michael A. Oropallo
Michael A. Oropallo

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